To: | Peter Lehmann Wines Pty Limited (alfred.zaher@bipc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79189923 - PORTRAIT - 0086666-106 |
Sent: | 3/23/2017 9:47:18 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79189923
MARK: PORTRAIT
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Peter Lehmann Wines Pty Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 3/23/2017
INTERNATIONAL REGISTRATION NO. 1304828
The Office received applicant’s communication filed on March 2, 2017. The mark description requirement is satisfied. See TMEP §§713.02, 714.04.
The trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application was sent previously.
- Application Serial No. 86884492
REFUSAL CONTINUED AND MAINTAINED: The following refusal is continued and maintained: Section 2(d) Refusal. In the response, applicant argues that the marks are sufficiently distinct because the registered mark has several meanings, the marks are different in sound and appearance, and Americans are not likely to stop and translate Italian terms. These arguments are unpersuasive because the registered mark directly translates to “PORTRAITS,” Italian is a common language, and the goods are identical. Thus, the refusal is continued and maintained.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Clare Cahill/
Examining Attorney
Law Office 120
(571) 272-5218
clare.cahill@uspto.gov
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.